I. The skilled person considers a reference to a particular
amino acid sequence in a claim as a true technical feature
characterizing the invention. Such a claim is not under Article
87 entitled to priority from an earlier application in which
that amino acid sequence was not disclosed (cf. points 8 and 16
of the Reasons).
II. A claim to a process which comprises the preparation of a
protein which has human tissue plasminogen activator (t- PA)
function, without further indication which of the many functions
of human t-PA are meant, is not allowable under Articles 83 and
84 EPC. This is firstly because the skilled addressee would be
left guessing whether or not a derivative which fulfils only one
of the functions typical of this molecule falls under the scope
of the claim. Moreover, the requirement of Article 83 EPC is not
fulfilled if the claim, on the basis of the broadest possible
meaning of the functional definition contained in it, relates to
an invention which, having regard to the examples and the
information given in the patent specification, cannot be
performed in the whole area claimed by a person skilled in the
art, using common general knowledge, without undue burden (cf.
point 27 of the Reasons).
III. Given a description that contains adequate information how
to produce human t-PA, and a claim directed to derivatives of
human t-PA with an indication of the functions to test for, the
skilled person can be expected to be able to prepare without
application of inventive skill or undue burden, derivatives of
human t-PA by way of amino acid deletion, substitution,
insertion, addition or replacement and test which of the
derivatives satisfy the functional requirements, so that the
claimed invention is adequately described for the purpose of
Article 83 EPC [cf. points 44 and 45 of the Reasons].
